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What are the benefits and disadvantages of registering a trademark on the Supplemental Register of the U.S. Patent and Trademark Office (USPTO) and the process of registering on the Supplemental Register after an initial denial?

The Client has applied for a trademark on the Principal Register however that application was denied. As a result, the Client is considering registering on the Supplemental Register.

What are the benefits of registering a trademark on the Supplemental Register of the USPTO? The Supplemental Register is used to register a trademark that is descriptive but has the possibility to identify goods or services.[1] Some benefits that registering on the Supplemental Register include the ability to use indicia of registration including “Registered in U.S. Patent and Trademark Office”, “Reg. U.S. Pat. & TM. Off.”, and the “®” symbol.[2]However in a lawsuit, no profits or damages will be recovered unless the defendant had actual notice of the registration. [3]A mark registered on the Supplemental Register will also provide notice to people conducting trademark searches and can serve as a bar to registration of subsequent confusingly similar marks.[4]If the mark has the potential to become distinctive through use in commerce, a mark registered on the Supplemental Register may apply once more for the Principal Register.[5]

What are the disadvantages of registering a trademark on the Supplemental Register? Marks registered on the Supplemental Register do not receive the advantages of §§ 1051(b), 1052(e), 1052(f), 1057(b), 1057(c), 1062(a), 1063-1068, 1072, 1115, and 1124 of the Trademark Act.[6]This means a mark registered on the Supplemental Register may not have the power to achieve incontestability of the mark, does not imply the right to exclusive use of the mark, may not have the ability to cancel the registration of another mark, does not have the presumption of Federal ownership, and provides protection for only nondistinctive trademarks.

What is the process of registering a trademark on the Supplemental Register of the USPTO if the initial application to the Principal Register was denied? If the initial application to the Principal Register was denied with a “nonfinal Office action”, a trademark registration application can be amended to the Supplemental Register by filling out a “Response to Office Action” online form.[7] If the initial rejection was denied with a “final Office action”, then the “Request for Reconsideration after Final Action” online form must be used.[8]Unlike an application for the Principal Register, the mark must be in use by the time of application on the Supplemental Register.

[7]How to Amend from the Principal to the Supplemental Register, U.S. Patent and Trademark Office, https://www.uspto.gov/trademark/laws-regulations/how-amend-principal-supplemental-register-1 (last visited Jan. 25, 2019).

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About

Nouvelle L. Gonzalo, Esq. is admitted to the state bars in Ohio and Florida. She is the member-owner of Gonzalo Law where her practice focuses on U.S. and international corporate law. As a premier U.S. and international corporate law firm in Cleveland and with a growing presence in North Central Florida, Gonzalo Law was established to offer businesses easy access to exceptional and effective legal services, tailored to meet their needs anywhere and anytime they need it. Contact the firm and experience the difference!